The Complainant is Boss Info AG and bossinfo.ch AG, Switzerland, represented by VISCHER, Switzerland.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / You Caiyan, China, represented internally.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 2021. The Respondent filed an informal Response with the Center on December 14, 2021, which was prior to the formal notification of the Complaint to the Respondent.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent requested an extension of the response due date on December 22, 2021. The Center in accordance with paragraph 5(e) of the Rules exceptionally granted an extension of the response due date until January 15, 2022. The Respondent did not submit any further communications. The Center notified the Parties of the Commencement of Panel Appointment Process on January 19, 2022.
The Center appointed John Swinson as the sole panelist in this matter on February 1, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe First Complainant is a Swiss company, and is the holding company of the Second Complainant.
The Second Complainant is also a Swiss company. The Second Complainant provides advisory, training and development services in the field of the information technologies, especially in relation to ERP software and cloud computing.
The First Complainant’s founder and chairman of board of directors is Mr. Simon Boss.
The First Complainant was established in 1999. In 1999, the First Complainant registered the disputed domain name. In about 2006, the First Complainant let the disputed domain name lapse by accident.
The First Complainant owns Swiss Registered Trademark No. 700819 for BOSS INFO AG registered in April 2017 and Swiss Registered Trademark No. 756714 for a logo that includes an arch shape and the words “BOSS INFO be boss in your business” registered in December 2020.
The Respondent has an address in China.
On August 2 and 3, 2021, a company with a Beijing address, Beijing Huapin Borui Network Technology Co., Ltd, applied for trademark protection in various jurisdictions including China, Australia, the United States of America, and Japan for the trademark “Bossinfo”. At the date of this decision, none of these applications have issued as registrations. As an example, the Australian trademark application claims a diverse range of goods and services such as data encryption services, electronic monitoring of personally identifying information to detect identity theft via the Internet, leasing of Internet domain names, nannying (baby sitting), dress rental, personal background investigations, chaperoning, computer dating services and online social networking services. Australian Trade Mark Application No. 2199553 was recently accepted and is currently in the opposition period.
According to a receipt from Escrow.com, a person called Weiping Zheng from Hong Kong, China acquired the disputed domain name from Yui M Quan on about September 10, 2021, for USD 5,000. According to the Respondent, Weiping Zheng is a partner of the Respondent, and the disputed domain name was acquired to protect the partner’s Chinese trademark interests.
From about September 2021 to the present time, the disputed domain name resolves to a webpage with pay-per-click (“PPC”) advertising links including relating to ERP software. In November 2021, the website at the disputed domain name also included an invitation to purchase the disputed domain name, and used Dan.com as its domain name broker. About that time, Mr. Boss made an offer via Dan.com of USD 20,000 to acquire the disputed domain name. This was the minimum offer that Dan.com would allow to be submitted. This offer was not accepted.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant makes the following submissions:
Since its inception in 1999, the distinctive sign “Boss Info” characterises the Complainant’s group of companies, as well as its products and services. In particular, “Boss Info” has been the distinctive part of the First Complainant's company name throughout its history, and it always operated the group’s online presence at the Internet address “www.bossinfo.ch”.
The First Complainant also registered the disputed domain name
The First Complainant owns the Swiss trademarks referred to above in Section 4.
The disputed domain name is identical or at least confusingly similar to the Complainant’s BOSS INFO trademarks. The only difference between the word mark BOSS lNFO AG and the disputed domain name is the absence in the disputed domain name of the descriptive element “AG”, which is the abbreviation of “Aktiengesellschaft” and means “public limited company”.
“Boss Info” is distinctive. The disputed domain name is comprised of the distinctive elements of the Complainant’s BOSS INFO trademarks.
The Complainant’s BOSS INFO trademarks which combine the words “boss” and “info” into “boss info” are not generic or descriptive signs in which the Respondent could allege having an interest.
The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s BOSS INFO trademarks or any domain names incorporating the Complainant’s BOSS INFO trademarks.
In the Whols records, the owner of the disputed domain name was obscured via a privacy service, so that the Respondent could initially not be identified. But the Complainant's research in the Wayback Machine (“www.archive.org”) shows that the disputed domain name has never been used for a website related to a legitimate business of any kind.
The disputed domain name resolves to a PPC page with links to product and service offers which are in competition with the Complainant. In particular, the page contains links to SAP's website, more precisely to a page on SAP's website concerning SAP's Enterprise Resource Planning (ERP) software, as well as to the website of the IT company Red Hat, and thus to competitors and to competing products and services.
The Respondent having most likely acquired the disputed domain name shortly before publishing the PPC page with links to some of the Complainants' competitors, it is clear that not only the use, but also the registration of the disputed domain name was made in bad faith.
Since September 12, 2021, Dan.com was the name server for the disputed domain name. As the First Complainant initially intended to resolve this matter amicably by purchasing the disputed domain name, Mr. Boss offered the substantial amount of USD 20,000 (also because an offer below this amount could technically not be submitted). Surprisingly, the Respondent declined this generous offer and made the outrageous counteroffer of USD 180,000, which marked the end of the negotiations.
The Respondent's behaviour is symptomatic of a conventional and easily recognized pattern of conduct, which is for a domain name to be registered in anticipation that it may ultimately become saleable for profit, either to the relevant trademark owner or to a competitor of the trademark owner. Whilst the domain name owner awaits a sufficiently attractive offer, which may take some time, the disputed domain name is commonly "monetized", that is to say, it leads to a website displaying links that may earn revenue, in the present case with PPC links to competing offers.
B. RespondentThe Respondent submitted an informal Response. In summary, the Respondent’s arguments are as follows:
The Respondent’s partner Weiping contacted the original owner of the disputed domain name in July 2021, and negotiated until the acquisition was completed on September 10, 2021.
The main purpose of purchasing the disputed domain name was to protect the Respondent’s partner’s trademark in China. The Respondent’s partner also filed applications at WIPO and EUIPO.
On November 3, 2021, the Respondent received an email from a Dan.com broker. The broker informed the Respondent that Simon Boss wanted to buy the disputed domain name. The Respondent rejected this offer.
The Respondent did not make a counteroffer of $180,000. The Respondent has no plans to sell the disputed domain name.
The Respondent did not use the disputed domain name in bad faith.
The Respondent did not reach out to the Respondent to sell the disputed domain name.
The Respondent was not aware of the Complainant’s trademark when acquiring the disputed domain name. The Complainant has no trademark rights in China.
6. Discussion and FindingsIn this decision, the Panel will refer to both Complainants jointly as the Complainant.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns a registered trademark for BOSS INFO AG.
The disputed domain name includes part of the Complainant’s trademark BOSS INFO in its entirety. The only difference is that “AG” from the Complainant’s trademark is not included in the disputed domain name. This change does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s BOSS INFO AG trademark under the Policy.
The term AG is the abbreviation of “Aktiengesellschaft” and means “public limited company”. It is a descriptive element of the Complainant’s trademark and can be disregarded for the purpose of analysis under the first element of the Policy.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc.,WIPO Case No. D2017-0371.
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s BOSS INFO AG trademark.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Complainant has not authorized, permitted or licensed the Respondent to use the Complainant’s trademark. Further, the Complainant asserts that the Respondent is not affiliated with the Respondent.
The Complainant also asserts that the Respondent is not commonly known by the disputed domain name, and uses the disputed domain name for a website with PPC links. The Complainant asserts that such use is not legitimate, but rather, it is use that misleads consumers into believing that the disputed domain name is associated with the Complainant.
The Complainant has rights in the BOSS INFO AG trademark which precede the registration of the disputed domain name by the Respondent.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Respondent provides evidence of recent trademark applications for “Bossinfo”. These trademark applications were made by Beijing Huapin Borui Network Technology Co., Ltd. The Respondent provides no evidence of a relationship between this company and the Respondent. In fact, the Respondent makes no submission regarding this company. This company has a different address to the Respondent. There is no evidence that the Respondent is an employee or agent of this company. The Respondent provides no explanation as to why this company applied for a trademark registration for services as diverse as leasing of Internet domain names, baby sitting and dress rental (but does not use the disputed domain name in respect of such services) or what this company does for its business.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
The evidence before the Panel shows that the Respondent listed the disputed domain name for sale within months of purchasing the disputed domain name. This is inconsistent with the Respondent’s submission that the Respondent acquired the disputed domain name to protect its “partner’s” Chinese trademark rights.
Accordingly, the Panel disregards the evidence of the trademark applications made by Beijing Huapin Borui Network Technology Co., Ltd for the purposes of the Panel’s analysis of the second element under the Policy.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The disputed domain name resolves to a website which has PPC links which advertise products in competition to the Complainant’s products.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering and using the disputed domain name to advertise, through PPC links, goods and services in competition with the Complainant, demonstrates that the Respondent likely knew of and targeted the Complainant. L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global,WIPO Case No. D2021-0962; Budget Rent A Car System, Inc v. Admin, Domain, WIPO Case No. D2010-0149; and Cancer Support Community, Inc. v. Jacob Kovacs,WIPO Case No. D2021-3024.
The combination of the words “boss” and “info” is not a common or typical use or combination of these words. The Respondent provided no explanation as to why the Respondent selected “Bossinfo” as a domain name. The Panel considers that a likely explanation is that the Respondent selected this combination of words because the Respondent, or an associate of the Respondent, knew of the Complainant or the Complainant’s BOSS INFO AG trademark.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.
As stated above, the evidence before the Panel shows that the Respondent listed the disputed domain name for sale within months of purchasing the disputed domain name. This is further evidence of bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
John Swinson
Sole Panelist
Date: February 15, 2022